Introduction: We are here in Colorado to interview Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.
Interviewer: The Kenosha News in Wisconsin recently published an article titled “Where do I go with my bright idea.” It looks like they are talking to a local inventors and entrepreneurs club. What’s your take?
Patent Attorney: Colorado has an inventor club too, as do many regions. These clubs can be a good place to meet other inventors, find out about local businesses that offer inventor services, such as prototyping, marketing, and funding. Just be careful not to talk about your invention at these or any other type of open meetings.
Interviewer: Why is that, don’t you have one year from any public disclosure to file a patent application?
Interviewer: Why is that, don’t you have one year from any public disclosure to file a patent application?
Patent Attorney: That’s a good point. The United States patent law used to afford inventors one year from any public disclosure or public use, sale or offer for sale, or publication of their invention, in which to file a patent application without any loss of right.
Interviewer: Right, so why the caution about discussing your invention now?
Patent Attorney: The patent law in the United States changed recently. The new patent law, known as the America Invents Act, took effect in stages, with many of the important provisions taking effect in March 2013. While the law will need to be clarified by the courts, it appears that at least some of these grace periods are no longer available.
Interviewer: What are you advising your clients under the new patent law – the America Invents Act?
Patent Attorney: Well I have always advised my clients not to publicly disclose or use, publish, or sell their invention prior to filing a patent application. While inventors may initially think only about US patents, there are times when filing outside of the US makes good business sense.
Interviewer: Even under the “old” patent law?
Patent Attorney: Yes, because most foreign countries have a stricter standard, and have required inventors file a patent application prior to any public disclosure of their invention.
Interviewer: So it has always been good practice to keep your invention confidential until a patent has been filed.
Patent Attorney: Yes, and now it can be even more important given the new patent laws in the United States.
Interviewer: Back to the article. I see that they also discuss the cost of applying for a patent, and that many inventors are foregoing the patent process and just taking their product to market.
Patent Attorney: Right, and the article also points out that under the “old” patent law there wasn’t necessarily a need to hurry to the patent office, the America Invents Act also introduced the “first-to-file” in the United States.
Interviewer: What is “first-to-file”?
Patent Attorney: The patent law used to be a “first-to-invent” system in the US. In other words, before the America Invents Act, if two people filed a patent application for the same invention, the US Patent Office would grant the patent to the inventor that could prove they invented first. Like the article says, inventors could take time to explore marketing opportunities and would be protected.
Interviewer: And how did the America Invents Act change that?
Patent Attorney: As the article points out, the America Invents Act changed to “a race to the patent office.” That is, whoever files their patent application first will get the patent, regardless of who invented first.
Interviewer: Why did the America Invents Act make this change?
Patent Attorney: As the article explains, this part of the law was intended to bring the United States in line with patent practices of most of the rest of the world.
Interviewer: This doesn’t seem like a good change, though, does it?
Patent Attorney: That’s what many are saying, including in this article, that the law seems to disadvantage the individual inventor and small businesses, who don’t have a patent attorney on staff that can file patent applications at the drop of a hat.
Interviewer: Thank you, those are good points. But I think that’s all we have time for today.
